‘Nichols’ foods’ – never a registered trade mark?

Historically, it has been difficult to register common surnames as trade marks without evidence of distinctiveness. This case may change all that.

Topic: Brands

Who: Nichols Plc and "Nichols" trademark

Where: Chancery Division of the High Court, London

When: July 2002

What happened:

The point in issue here was the extent to which relatively common surnames can be registered as trademarks by a particular trader. The Trademark Registry's concern has always been that unless this is controlled, it could operate to unfairly prevent sole traders called Smith or Jones from using their names in connection with their businesses. In this connection there is admittedly an "own name" defence which individuals can use these circumstances, but the other concern which the Registry has in these cases is that if a surname is very common, there has to be a serious question as to whether the name can be regarded as sufficiently "distinctive" of products coming from one particular business in the UK to warrant the owner of the business having a monopoly right in that name.

The name in question in this case was "Nichols" and the application was for registration in several classes of food and drink in the context of their being supplied through vending machines.

The evidence before the Registry was that the Nichols surname appeared in the London telephone directory 483 times. The convention in these cases is that if a name appears more than 200 times then it will be regarded as "common" and in most cases special evidence of distinctiveness will be needed before the mark can be registered. Accordingly, the Registry rejected the application to register the mark for the food and drink classes, although it did accept the registration in Class 9 for vending machines. This was on the basis that so few people traded in these products that distinctiveness was less of a problem.

The decision was appealed against, and Jacob J was not so persuaded that the case was clear cut. Indeed it was sufficiently uncertain in his view to refer the case to the European Court of Justice. The precise questions which the judge will pass to the ECJ have not yet been reported, but the judge's main area of concern appeared to be the extent to which a "fairly" common surname could be completely void of distinctiveness.

Nichols Plc had argued that individuals who legitimately wished to use their own name in connection with their businesses would not be disadvantaged by a "Nichols" trademark registration. This was because of the "own name" defence mentioned above. The Judge was not so sure, however, that the availability of such a defence could be used to leverage Nichols Plc's position in this way.

Why this matters:

It is likely to be a year or more before the ECJ hands down its opinion on the questions which Jacob J refers to it. In a recent case already reported on Marketinglaw, however, the ECJ has shown perhaps a surprising degree of flexibility on the question of distinctiveness in brands. This was in the "Baby Dry" case where an apparently 100% descriptive and non-distinctive phrase was held to be registerable. Whether it adopts a similar approach in the context of "fairly common" surnames remains to be seen.